In most cases, there are two types of trademark applications available to an applicant seeking trademark registration – a Section 1(a) Actual Use Application or a Section 1(b) Intent to Use Application. So what application do you need to file?
What are the Two Most Common Types of Trademark Applications?
- Actual Use Application: A Section 1(a) Actual Use Application is an application used by an applicant that is currently using their trademark in commerce in relation to the goods and/or services they offer or sell.
- Intent to Use Application: Conversely, a Section 1(b) Intent to Use Application is just that, an application filed based upon an intent to use a particular name. In other words, it is an application filed by an Applicant who is not yet using their trademark in commerce but has plans to do so in the future. Therefore, the question is whether you are using your mark in commerce.
What is Use?
Use of a trademark in commerce is defined by the Trademark Manual of Examining Procedure § 901.01 (“TMEP”) as follows:
The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this Act, a mark shall be deemed to be in use in commerce–
(1) on goods when—
(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
TMEP § 901.01.
Section 1(a) Actual Use Application
Where an Applicant can show that they are using their trademark in commerce, the appropriate application is the Section 1(a) Actual use Application. One of the requirements of a Section 1(a) Actual Use Application is that you must file with it a specimen of use. A specimen is required in order to prove to the USPTO that you are in fact using the mark in commerce at the time of filing the trademark application. The application will also require that you indicate the dates of first use of the mark in commerce.
- If you have already used your trademark, and have provided those goods or services across state lines. Then this is the right application for you.
Section 1(b) Intent to Use Application:
Looking at the definition above, if you are not using your mark in commerce then you need to file a Section 1(b) Intent to Use Application. One of the main benefits of filing a Section 1(b) Intent to Use Application is it is an opportunity for a person or business to essentially reserve a name prior to starting use of the trademark. This is important because once use of a trademark occurs, this can open up a person or business to trademark infringement liability. It is for this reason it is strongly recommend to consider filing your trademark application prior to starting use of your trademark.
When filing a Section 1(b) Intent to Use Application, all the Applicant does is confirm its intention to use the mark – they do not confirm that they have actually used the trademark in commerce. This distinction is important because to sue for trademark infringement, the plaintiff must be able to show actual use by the defendant. As a result, where a Section 1(b) Intent to Use Application is filed, there is no use. And where there is no use, there is not a valid claim for trademark infringement.
The Section 1(b) Intent to Use Application also has extra costs associated with it. Specifically, unlike a Section 1(a) Actual Use Application, a Section 1(b) Application requires that use be shown at a later date after the initial filing. To do this, an Applicant must either file an Amendment to Allege Use or a Statement of Use after the initial filing. To files these documents, the USPTO charges an additional $100 per trademark, per class of goods. Therefore, prior to filing, keep in mind that extra costs will be incurred. However, such costs are minor as compared to making sure you secure trademark rights to a name that you have now hope to represent your future good and/or service.
- If you have not used your trademark across state lines this is the application for you.
- Keep in mind, services such as restaurants or tourist services likely have interstate commerce because they serve consumers from across state lines. So be sure to check whether your business serves clients from other states. If so, you may be able to file an actual use application.
What Should You Do?
Because filing the correct application with the USPTO is crucial to the validity of your mark, it is important that you contact an attorney to help you determine the right application for you and your business’s needs.
- Generally, if you’ve used the name already, you can probably file a 1(a) actual use application.
- If you haven’t used the name, you will likely want to file a 1(b) intent to use application.
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